Ex Parte Eidelberg et al

Patent Trial and Appeal Board

Oct 24, 2018

13771410 (P.T.A.B. Oct. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/771,410 02/20/2013
119563 7590 10/26/2018
Wood, Herron & Evans, LLP (Goodyear)
2700 Carew Tower
441 Vine Street
Cincinnati, OH 45202
FIRST NAMED INVENTOR
Boaz E. Eidelberg
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
GTRC-168US 1286
EXAMINER
WILSON, MICHAEL H
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
10/26/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usptodock@whe-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BOAZ E. EIDELBERG,
MARK A. SIEVERDING, ROBERT T. IRWIN,
MAX JOEL MILLER, JR., ROBERT D. IRWIN, PETER BRUDER,
JAMES WILEY, JAMES M. DUNN, and BRAD KRAUS
Appeal2018-001408
Application 13/771,410
Technology Center 1700
Before JEFFREY B. ROBERTSON, GEORGE C. BEST, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1, 5, 7, 8, 10-16, 18-21, 23-28,
and 30-32. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellant is the applicant, The Goodyear Tire & Rubber Company, which,
according to the Appeal Brief, is the real party in interest. Appeal Brief filed
June 5, 2017 ("App. Br."), 3.
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Application 13/771,410
STATEMENT OF THE CASE
Appellant claims an applicator assembly for applying a cord to a tire-
building surface configured to rotate about an axis during tire construction
(independent claims 1 and 12) and a system for applying a cord to a core
member having a tire-building surface and an axis of rotation about which
the core member rotates (independent claim 15). App. Br. 3-5. Claim 1
illustrates the subject matter on appeal and is reproduced below with
contested language italicized:
1. An applicator assembly for applying a cord to a tire-
building surface configured to rotate about an axis during tire
construction, the applicator assembly comprising:
an applicator member with an application surface
configured to apply the cord to the tire-building surface;
a first motor that is operatively coupled to the applicator
member and is configured to rotate the applicator member
about a first axis relative to the tire-building surface, the cord
being collinear with the first axis through at least a portion of
the applicator assembly;
a first linear positioner that is operatively coupled to the
applicator member, the first linear positioner configured to
move the applicator member in a first linear path relative to the
tire-building surface;
a second motor that is operatively coupled to the
applicator member and the first motor, the second motor being
configured to rotate the applicator member and the first motor
about a second axis that is perpendicular to the first axis, the
first motor and the second motor lying along the second axis;
and
a second linear positioner operatively coupled to the
applicator member and configured to move the applicator
member in a second linear path perpendicular to the first linear
path.
App. Br. 41 (Claims Appendix) (emphasis added).
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The Examiner maintains the following rejections in the Examiner's
Answer entered September 25, 2017 ("Ans."):
I. Claim 28 under 35 U.S.C. § 112, first paragraph for failing to
comply with the written description requirement;2
II. Claims 1, 7, 8, 10, 11, 15, 16, 18-21, 23-28, 31, and 32 under
35 U.S.C. § 112, second paragraph as being indefinite for failing to
particularly point out and distinctly claim the subject matter that the
applicant regards as the invention;
III. Claim 16 under 35 U.S.C. § 112, fourth paragraph as being of
improper dependent form for failing to further limit the subject matter of the
claim upon which it depends, or for failing to include all the limitations of
the claim upon which it depends;
IV. Claims 1, 11, 24, 25, 27, and 28 under 35 U.S.C. § 102(b) as
anticipated by Sugimoto; 3
2 Although the Examiner withdrew the rejection of claims 12, 21, and 23
under 35 U.S.C. § 112, first paragraph for failing to comply with the written
description requirement in the Answer, the Examiner maintains the rejection
of claim 28. Ans. 2. The Examiner does not explicitly mention the status of
claims 13, 14, and 30 in the Answer, however. But because the Examiner
indicates in the Final Action that claims 13, 14, and 30 were rejected
"because they depend from claim 12" (Final Act. 3), and because the
Examiner withdrew the rejection of claim 12, the Examiner also should have
withdrawn the rejection of claims 13, 14, and 30. The Examiner apparently
did so because the Examiner addresses only claim 28 in the Answer. Ans. 2.
In the event of further prosecution of this application, however, the
Examiner should confirm the status of claims 13, 14, and 30 with respect to
the rejection under 35 U.S.C. § 112, first paragraph.
3 Sugimoto et al., US 4,507,046, issued March 26, 1985 (hereinafter
"Sugimoto").
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V. Claims 1, 5, 15, 16, 18, 24, 25, 27, 28, 31, and 32 under
35 U.S.C. § 103(a) as unpatentable over Laske, 4 Iizuka, 5 Lowe, 6 and
Sugimoto;
VI. Claims 7, 8, 10, 19, and 20 under 35 U.S.C. § I03(a) as
unpatentable over Laske, Iizuka, Lowe, Sugimoto, Perkins, 7 N akahama, 8
Okabe 9 and Citelli · 10
' '
VII. Claim 11 under 35 U.S.C. § I03(a) as unpatentable over Laske,
Iizuka, Lowe, Sugimoto, Takagi, 11 and Iwasaki; 12
VIII. Claims 12 and 30 under 35 U.S.C. § I03(a) as unpatentable
over Laske, Lowe, Sugimoto, Iizuka, and Ozawa; 13
IX. Claims 13 and 14 under 35 U.S.C. § I03(a) as unpatentable
over Laske, Lowe, Sugimoto, Iizuka, Ozawa, Perkins, N akahama, Okabe,
and Citelli;
X. Claims 21 and 23 under 35 U.S.C. § I03(a) as unpatentable
over Laske, Iizuka, Lowe, Sugimoto, and Ozawa; and
4 Laske et al., US 2011/0146871 Al, published June 23, 2011 (hereinafter
"Laske").
5 Iizuka et al., US 6,372,070 Bl, issued April 16, 2002 (hereinafter
"Iizuka").
6 Lowe, GB 808,342, published February 4, 1959.
7 Perkins, US 4,869,773, issued September 26, 1989.
8 Nakahama et al., US 4,361,454, issued November 30, 1982 (hereinafter
"N akahama").
9 Okabe et al., JP 58-134 731 A, published August 11, 1983 (hereinafter
"Okabe").
1° Citelli, US 4,042,076, issued August 16, 1977.
11 Takagi, US 6,913,058 Bl, issued July 5, 2005.
12 Iwasaki, US 8,221,569 B2, issued July 17, 2012.
13 Ozawa et al., US 5,395,475, issued March 7, 1995 (hereinafter "Ozawa").
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XI. Claim 26 under 35 U.S.C. § I03(a) as unpatentable over Laske,
Iizuka, Lowe, Sugimoto, Iwasaki, Greenfield, 14 and Inoue. 15
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's contentions, we reverse the Examiner's rejection of
claims 1, 7, 8, 10, 11, 15, 16, 18-21, 23-28, 31, and 32 under 35 U.S.C.
§ 112, second paragraph, the Examiner's rejection of claims 1, 11, 24, 25,
27, and 28 under 35 U.S.C. § I02(b), and the Examiner's rejections of
claims 1, 5, 7, 8, 10-16, 18-21, 23-28, and 30-32 under 35 U.S.C. § I03(a),
for the reasons set forth in the Appeal Brief and below. We affirm the
Examiner's rejection of claim 28 under 35 U.S.C. § 112, first paragraph for
failing to comply with the written description requirement because Appellant
does not substantively challenge this rejection. We summarily affirm the
Examiner's rejection of 16 under 35 U.S.C. § 112, fourth paragraph because
Appellant does not contest this rejection.
Rejection I 16
Claim 28 depends from claim 27, which depends from claim 1. Claim
28 recites that the applicator assembly of claim 27 further comprises "a
frame, wherein the first linear positioner is coupled to the frame and is
configured to be stationary during application of the cord to the tire-building
surface."
14 Greenfield, US 724,571 A, issued April 7, 1903.
15 Inoue et al., US 2008/0056859 Al, published March 6, 2008 (hereinafter
"Inoue").
16 See footnote 2 above for an explanation as to why we address only claim
28.
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The Examiner finds that Appellant's Specification "does not support
the use of holding the actuated positioner stationary during cord
application," and finds that claim 28, therefore, fails to comply with the
written description requirement. Final Act. 4.
Appellant only addresses the Examiner's rejection of claim 12 for
failing to comply with the written description requirement in the Appeal
Brief, and does not address the Examiner's rejection of claim 28. App. Br.
6-8. In the Reply Brief, however, Appellant asserts that the Examiner's
rejection of claim 28 "is improper and unsupported for the reasons set forth
in the Appeal Brief." Reply Br. 2. Claim 28 does not depend from claim
12, however, and the Examiner provides separate bases for rejecting claims
12 and 28 for lack of written description.
Accordingly, Appellant does not substantively address the Examiner's
rejection of claim 28 for failing to comply with the written description
requirement, which we consequently sustain. 37 C.F.R. § 4I.37(c)(l)(iv)
(requiring that "arguments shall explain why the examiner erred as to each
ground of rejection ... [and that] any arguments or authorities not included
in the appeal brief will be refused consideration by the Board").
Rejection II
Claims 1, 7, 8, 10, 11, 15, 16, 18-21, 23-25, 27, 28, 31, and 32
We need consider only independent claims 1 and 15, because claims
7, 8, 10, 11, 16, 18-21, 23-25, 27, 28, 31, and 32 each depend from claim 1
or claim 15.
The Examiner finds that it is unclear whether "the cord being collinear
with the first axis through at least a portion of the applicator assembly"
recited in claims 1 and 15 "is a structural requirement of the applicator
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assembly or a function which the assembly must be capable of performing."
Final Act. 4--5. The Examiner finds that it is therefore "impossible to tell"
whether claims 1 and 15 require the first motor to be configured to operate
with the cord collinear with the first axis, or whether this is "a distinct
structural limitation positively reciting the cord material worked upon by the
apparatus as a kit with the claimed applicator." Ans. 4.
In determining compliance with 35 U.S.C. § 112, second paragraph,
we must determine whether the claims set out and circumscribe a particular
area with a reasonable degree of precision and particularity. The
definiteness of claim language must not be analyzed in a vacuum, "but
always in light of the teachings of the prior art and of the particular
application['s] disclosure as it would be interpreted by one possessing the
ordinary level of skill in the pertinent art." In re Moore, 439 F.2d 1232,
1235 (CCPA 1971). A claim is considered indefinite under 35 U.S.C. § 112,
second paragraph only if it does not reasonably apprise those skilled in the
art of its scope. Amgen, Inc. v. Chugai Pharm. Co., Ltd., 927 F.2d 1200,
1217 (Fed. Cir. 1991).
With these principles in mind, the Examiner does not carry the burden
of showing that one of ordinary skill in the art would not understand the
scope and meaning of "the cord being collinear with the first axis through at
least a portion of the applicator assembly" as recited in claims 1 and 15 in
view of the description provided in Appellant's Specification. In re
Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014) (stating "the statutory
language of 'particular[ity ]' and 'distinct[ ness ]' indicates, claims are
required to be cast in clear-as opposed to ambiguous, vague, indefinite-
terms. "). The Specification explains that Appellant's apparatus comprises
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applicator assembly 16 that includes applicator member 32 for applying cord
12 to core member 14. ,r,r 45, 49; Fig. 1. The Specification indicates that
the apparatus also includes pinion gear 88 and bevel gear 90 that are driven
by servo motor 82 (first motor) to rotate applicator member 32 about axis 64
(first axis). ,r 59; Fig. 7. The Specification indicates that bevel gear 90
defines opening 94 through which cord 12 passes to applicator member 32.
Id. The Specification states that cord 12 may be collinear with axis 64
through at least a portion of applicator assembly 16. ,r 59; Fig. 7.
In view of this description in Appellant's Specification, one of
ordinary skill in the art reasonably would understand that the recitation in
claims 1 and 15 of a "cord being collinear with the first axis through at least
a portion of the applicator assembly" is a structural feature specifying the
position of the cord in the applicator assembly relative to the first axis, rather
than a function that the claimed applicator assembly must be capable of
performing. Thus, contrary to the Examiner's assertion, one of ordinary
skill in the art would understand that the collinearity of the cord and the first
axis recited in claims 1 and 15 is not a functional capability or configuration
of the first motor. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007) (During prosecution of patent applications, "the PTO must
give claims their broadest reasonable construction consistent with the
specification. . . . Therefore, we look to the specification to see if it provides
a definition for claim terms, but otherwise apply a broad interpretation.").
Consequently, one of ordinary skill in the art would understand the
scope and meaning of the "cord being collinear with the first axis through at
least a portion of the applicator assembly" recited in claims 1 and 15, and we
therefore do not sustain the Examiner's rejection of claims 1, 7, 8, 10, 11,
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15, 16, 18-21, 23-25, 27, 28, 31, and 32 under 35 U.S.C. § 112, second
paragraph.
Claim 26
Claim 26 depends from claim 1 and recites that the cord is configured
to extend through an opening prior to contact with the applicator member.
The Examiner finds that "a plain reading of this limitation would
seemingly require that the cord is a required feature of the applicator
assembly, [but] the preamble of claim 1 indicates that the cord is a material
worked upon by the applicator assembly and therefore not a required
structural feature of the applicator itself." Final Act. 5-6. The Examiner
concludes that the recitation in claim 26 of "'the cord is configured to extend
through the opening'" is therefore unclear. Id.
As discussed above, however, in view of the description provided in
Appellant's Specification, one of ordinary skill in the art reasonably would
understand that the cord recited in claim I-and claim 26, which depends
from claim I-is a structural feature of the claims. One of ordinary skill in
the art would accordingly understand the scope and meaning of "the cord is
configured to extend through the opening prior to contact with the applicator
member" recited in claim 26. We accordingly do not sustain the Examiner's
rejection of claim 26 under 35 U.S.C. § 112, second paragraph.
Rejection III
We summarily sustain the Examiner's rejection of claim 16 under
35 U.S.C. § 112, fourth paragraph because Appellant does not contest this
rejection. App. Br. 6-40. 37 C.F.R. § 4I.37(c)(l)(iv).
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Rejection IV
We need address only claim 1 because claims 11, 24, 25, 27, and 28
each depend from claim 1.
Appellant argues that Sugimoto does not disclose "a cord for use in
manufacturing tires and so cannot expressly or inherently disclose a
collinear relationship between a cord and a first axis about which an
applicator member is rotated." App. Br. 13. In light of the Examiner's
concession in the Answer that if "claim [ 1] is found to require a tire cord,
then the examiner agrees that Sugimoto does not address the requirements of
the claim" (Ans. 8) we do not sustain the Examiner's rejection of claims 1,
11, 24, 25, 27, and 28 under 35 U.S.C. § 102(b) as anticipated by Sugimoto
because, as discussed above, we determine that the cord recited in claim 1 is
a structural feature of the claim.
Rejections V-XI
Like claim 1, independent claims 12 and 15 require the recited
applicator assembly and system, respectively, to include a first motor
operatively coupled to an applicator member and configured to rotate the
applicator member about a first axis relative to a tire-building surface.
Claims 1, 12, and 15 further require a second motor to be operatively
coupled to the applicator member and the first motor, and require the second
motor to be configured to rotate the applicator member and the first motor
about a second axis perpendicular to the first axis.
The Examiner finds that Laske discloses a tire cord applicator in the
form of "a robot traveling on rails" that includes rotational axes X, Y. Final
Act. 10 (citing Laske Fig. 12); Ans. 9 (citing Laske Fig. 12). The Examiner
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finds that "Laske apparently discloses a freely-rotating applicator roller" that
rotates around the X axis, and "Laske requires powered rotation around
vertical axis Y." Final Act. 10; Ans. 9. The Examiner determines that
"Lowe apparently discloses that one of ordinary skill in the art would
consider a freely-rotatable applicator roller to be functionally equivalent to
an actuated[] roller." Final Act. 10 (citing Lowe pg. 6, 1. 15). The
Examiner finds, "[a]dditionally or alternatively, Lowe discloses that such
actuation is beneficial for closely-spaced cord patterns." Final Act. 10
( citing Lowe pg. 6, 11. 67-69).
The Examiner determines that Lowe thus provides evidence that one
of ordinary skill in the art would have found it obvious to provide powered
rotation of Laske's applicator roller around the X axis "because this is an
obvious alternative to Laske's freely-rotating applicator[] and/or because it
would provide the benefit of close spacing." Ans. 9 ( citing Lowe pg. 1,
11. 54--72; pg. 6, 11. 1--4). The Examiner determines that Lowe "does not
disclose how the motorized vertical and horizontal axes required by the
combination of references (Laske Figure 12: X, Y) could be provided."
Final Act. 11.
The Examiner finds that Sugimoto discloses that coupling a vertical
rotational actuator to a horizontal rotational actuator moved on rails, such as
those of Laske's system, "is a well-known/standard mechanism ... and/or is
recognized as being low in cost and/or is simple and/or minimizes power
loss." Final Act. 11 ( citing Sugimoto col. 3, 11. 28--41; col. 4, 11. 6, 8; col. 9,
11. 40--45); Ans. 9-10 (citing Sugimoto col. 9, 1. 42; Figs. 5, 12-14). In view
of these disclosures in Sugimoto, the Examiner concludes that it would have
been obvious to one of ordinary skill in the art to "provide this required
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actuation around the vertical Y axis and horizontal X axis of the track robot
of Laske" by using "the arrangement of actuators from Sugimoto in which a
track robot [] is used to provide rotation around a vertical [Z] axis [] like the
Y rotational axis of Laske as well as a transvers horizontal [Y 1] axis [] like
that of transverse axis X of [Laske]." 17 Ans. 9-10 (citing Sugimoto Figs. 5,
12-14).
Appellant contends that the Examiner's proposed modification of
Laske's "appears to be impossible," and would result in a more complicated
device without providing any benefit. Reply Br. 10. The weight of the
evidence on this appeal record supports Appellant's position.
Laske discloses an apparatus for applying one or more cords 2 onto
rotatable tire core 52. ,r 52; Fig. 12. Laske discloses that the apparatus
includes ply applier head 200 rotatably mounted about a Y axis. Id. Laske
explains that "rotation of[] ply applier head 200 is necessary to apply the
cord in the shoulder and bead area," and "ply applier head 200 can thus
rotate about rotatable core 52 on each side in order to place the ply [ cord] in
the sidewall and bead area." Id. Laske discloses that "[l]ocated adjacent to
the ply applier head 200 is a roller 210 which is pivotally mounted about an
X axis so that the roller can freely swivel to follow the cord trajectory." Id.
Laske discloses that applier head 200 is mounted to a support frame
assembly that can translate in the X, Y, and Z axes. Id.
Lowe discloses an apparatus for winding pneumatic tire
reinforcements or cords onto the exterior surface of a continuously rotating
tire former. Pg. 1, 11. 8-9, 41--45. Lowe discloses that the apparatus
17 It appears that the Examiner mistakenly refers to the "transverse axis X of
Sugimoto" rather than the transverse axis X of Laske. Ans. 10.
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includes grooved pulley 93 that guides the cord onto winding surface 36a of
the former. Pg. 1, 11. 45--47, 54--57; pg. 5, 11. 79-82; Figs. 10 and 11. Lowe
discloses that guide pulley 93 reciprocates transversely over the winding
surface 36a a plurality of times for each rotation of the former, and explains
that double-ended solenoid plunger 7 4 and associated solenoids 7 6, 77 adjust
the angular disposition of pulley 93 at each end of the winding path. Pg. 1,
11. 47-53; pg. 6, 11. 11-31, 62---66; Figs. 10 and 11. Lowe discloses that this
use of solenoids and a plunger "for adjusting the angle of inclination of the
guide pulley at each end of each of the winding paths ... is particularly
useful when the spacing of adjacent lengths of cord is relatively close."
Pg. 6, 11. 62---64.
As discussed above, the Examiner determines that it would have been
obvious to one of ordinary skill in the art to provide powered rotation of
Laske' s roller 210 around an X axis in view of the actuated guide pulley
disclosed in Lowe "because this is an obvious alternative to Laske's freely-
rotating applicator [roller 210] and/or because it would provide the benefit of
close spacing" as disclosed in Lowe. Ans. 9.
But the Examiner does not provide a sufficient factual basis to
establish that one of ordinary skill in the art would have found modifying
Laske' s apparatus to provide roller 210 with powered actuation around an X
axis to be useful or desirable. As discussed above, Laske discloses that
roller 210 is pivotally mounted about an X axis to allow it to freely swivel to
follow the trajectory of a cord being applied onto rotatable tire core 52. One
of ordinary skill in the art would have understood that the trajectory of the
cord would be established by rotation of ply applier head 200 about a Y axis,
and translation of support frame assembly in the X, Y, and Z axis. The
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Examiner does not explain why powered actuation of roller 210 around the
X axis would be useful in Laske' s apparatus, and how such powered
actuation would affect the ability of roller 210 to follow the trajectory of the
cord.
Although the Examiner asserts that "Lowe apparently discloses that
one of ordinary skill in the art would consider a freely-rotatable applicator
roller to be functionally equivalent to an actuated roller" (Final Act. 10), the
Examiner does not address the structural and functional differences between
freely swiveling roller 210 disclosed in Laske and reciprocating guide pulley
93 disclosed in Lowe, and establish that, regardless of those differences, one
of ordinary skill in the art would nonetheless have considered these
components to be functionally equivalent.
The Examiner also asserts that Lowe discloses that "actuation is
beneficial for closely-spaced cord patterns" (Final Act. 10), thus providing a
reason to modify Laske' s apparatus to provide powered actuation of roller
210 about the X axis. In making this assertion, the Examiner implicitly
indicates that Laske' s apparatus would not already produce closely-spaced
cord patterns. The Examiner does not explain, however, why Laske' s
apparatus would need to be modified to provide roller 210 with powered
actuation around the X axis to produce closely-spaced cord patterns, when
Laske' s ply applier head 200 rotates about a Y axis, and support frame
assembly translates ply applier head 200 in the X, Y, and Z axes.
The Examiner also does not establish that Sugimoto would have
suggested "this required actuation around the vertical Y axis and horizontal
X axis of the track robot of Laske." Ans. 9-10. As discussed above, the
Examiner asserts that Sugimoto discloses that coupling a vertical rotational
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actuator to a horizontal rotational actuator moved on rails "is a well-
known/ standard mechanism ... and/or is recognized as being low in cost
and/or is simple and/or minimizes power loss." Final Act. 11. Sugimoto
discloses, however, that such advantages are provided by allowing
unnecessary degrees of freedom to be easily eliminated, and permitting a
combination of degrees of freedom to be easily changed, in the wrist of an
articulated robot, rather than by coupling a vertical rotational actuator to a
horizontal rotational actuator that moves on rails, as the Examiner asserts.
Sugimoto col. 2, 1. 63---col. 3, 1. 36; col. 3, 1. 65---col. 4, 1. 10. It follows that
the Examiner does not establish that the relied-upon disclosures in Sugimoto
would have led one of ordinary skill in the art to modify Laske' s apparatus
to provide motorized actuation around both X and Y axes.
Accordingly, the Examiner does not establish that the combined
disclosures of Laske, Lowe, and Sugimoto 18 would have suggested an
applicator assembly or system that includes a first motor operatively coupled
to an applicator member and configured to rotate the applicator member
about a first axis relative to a tire-building surface, and a second motor
operatively coupled to the applicator member and the first motor, and
configured to rotate the applicator member and the first motor about a
second axis perpendicular to the first axis, as required by claims 1, 12, and
15. It follows that the Examiner does not establish a prima facie case of
obviousness of the subject matter recited in claims 1, 12, and 15 within the
18 The Examiner relies on Iizuka for disclosing an apparatus having
components that the Examiner finds correspond to the first and second linear
positioners recited in claim 1. Final Act. 10. Thus, the Examiner does not
rely on Iizuka for any disclosure that remedies the deficiencies of Laske,
Lowe, and Sugimoto discussed above.
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meaning of 35 U.S.C. § 103(a). Oetiker, 977 F.2d at 1445 ("[T]he examiner
bears the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability").
We accordingly do not sustain the Examiner's rejections of claims 1,
5, 7, 8, 10-16, 18-21, 23-28, and 30-32 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's rejection of claim 28 under 35 U.S.C.
§ 112, first paragraph and rejection of 16 under 35 U.S.C. § 112, fourth
paragraph. We reverse the Examiner's rejection of claims 1, 7, 8, 10, 11, 15,
16, 18-21, 23-28, 31, and 32 under 35 U.S.C. § 112, second paragraph,
rejection of claims 1, 11, 24, 25, 27, and 28 under 35 U.S.C. § 102(b), and
rejections of claims 1, 5, 7, 8, 10-16, 18-21, 23-28, and 30-32 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
16